Office Action
Remarks
The present application for reissue, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Accordingly, this application for reissue has been examined with the following effect set forth herein.
Reminder of Duties - 37 CFR §§ 1.178(b) and 1.56
Applicant is reminded of the continuing obligation under 37 CFR § 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. D1,043,274 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Preliminary Amendment
The preliminary amendment received December 19, 2024 is hereby acknowledged, and found to be in compliance with 37 CFR § 1.115(a)(2) as having been received on the filing date of the application and prior to examination. It is therefore considered part of the original disclosure. No new matter has been introduced. The corrections to the drawings have been noted.
Non-Final Rejection of Reissue Claim - 35 U.S.C. § 251
The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. The claim is rejected as being based upon a defective reissue under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
In the submitted reissue declaration, the form states:
At least one error upon which reissue is based is described below. If the reissue is a broadening reissue, a claim that application seeks to broaden must be identified:
The reissue declaration fails to explicitly “described” the error upon the reissue is based and does not identify how the scope of the claim is being broaden. Applicant has not indicated the specific broadening error within the declaration, consequently rendering the declaration defective.
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Non-Final Rejection of Reissue Claim - 35 U.S.C. § 112(b)
The claim is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or, for applications subject to pre-AIA 35 U.S.C. 112, the applicant) regards as the invention.
The claim is indefinite because the scope of protection sought is unrecognizable from the drawing disclosure and specification.
The claim is directed to “the ornamental design for a food cutter, as shown and described.” As such, the scope of the claim is defined entirely by the drawings and the use of solid and broken lines therein.
In the drawings, solid lines are understood to depict portions of the article that form part of the claimed design, while broken lines are understood to depict portions that do not form part of the claimed design. Although partial claiming is permissible in a design patent, the boundaries of the claimed and excluded portions must be clearly and unambiguously delineated so that the scope asserted can be reasonably ascertained.
In the present application, numerous transition surfaces between the handle portion and the head portion of the food cutter is depicted with interior contours shown in solid lines, while portions of the perimeter defining that same surface are shown in broken lines. As a result, the drawings use a combination of solid and broken lines to demarcate a single continuous surface region. This mixed line treatment creates ambiguity as to whether the transition surface is part of the claimed design or excluded from the claim.
Because the same surface region is partially bounded by solid lines and partially bounded by broken lines, it is unclear whether Applicant intends to claim the ornamental appearance of that surface or disclaim it. Two reasonable interpretations exist: (1) the surface is claimed because its shape and contours are partly shown in solid lines, or (2) the surface is excluded from the claim because it is partly bounded by broken lines indicating exclusion. The drawings therefore fail to provide clear notice of the scope of the claimed design.
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Accordingly, the claim does not particularly point out and distinctly claim the subject matter regarded as the invention, rendering the claim indefinite under 35 U.S.C. §112(b).
The ambiguity is not cured by the written description, as the specification does not clarify whether the transition surface bounded by mixed solid and broken lines forms part of the claimed design.
Because the drawings employ a combination of solid and broken lines to demarcate contiguous surfaces of visually unified elements, the boundaries of the claimed design cannot be determined with reasonable certainty, rendering the claim indefinite under 35 U.S.C. §112(b). Moreover, even if the selectively claimed and disclaimed surfaces were construed as defining the scope of the claim, the original disclosure does not reasonably convey possession of such a selectively deconstructed design, as discussed below with respect to 35 U.S.C. §112(a).
Non-Final Rejection of Reissue Claim - 35 U.S.C. § 112(a)
The claim is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as failing to comply with the description requirement. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the design now claimed at the time the application was filed.1
The claim is directed to an ornamental design defined by the drawings. Although partial claiming is permitted in design patents, the original disclosure must reasonably convey to a person of ordinary skill in the art that the inventor was in possession of the claimed design as a whole at the time of filing.
Design patent law does not permit an applicant to retroactively subdivide a visually unified component into claimed and unclaimed sub-surfaces unless the original disclosure clearly conveyed such subdivision as part of the design concept. Possession is not established merely because individual surfaces or boundary lines appear in the drawings; rather, the drawings must reasonably convey the ornamental design that is ultimately claimed.
In the present application, the originally filed drawings depict a unitary food cutter article in which the handle and opposing end cap are each shown as single, unified ornamental elements. The original disclosure presents these elements as visually inseparable components of the overall design.
By amendment, Applicant seeks to exclude selective surfaces of the handle and opposing end cap while retaining adjacent surfaces of those same elements as part of the claimed design. This selective excision fractures visually unified components and results in a new visual arrangement that was not disclosed in the original drawings or the ‘274 patent. The amended design does not correspond to any design that was originally shown or suggested in the ‘274 patent, nor does the original disclosure reasonably convey possession of a design in which only certain surfaces of the handle and end cap are claimed while other contiguous surfaces of those same elements are excluded.
While an applicant may broaden a design claim by excluding portions of the article shown in solid lines, such amendments are permissible only where the original drawings reasonably convey possession of the resulting broader design. An amendment that selectively removes visually significant and structurally defining elements, thereby altering the overall visual impression of the design, exceeds the scope of the original disclosure and is not supported by the original drawings (from the ‘274 patent).
Accordingly, the amended claim defines a design that was not described in the original disclosure of the ‘274 patent, and therefore lacks written description support under 35 U.S.C. §112(a).
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Replacement Drawings
Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
Conclusion
The claim is rejected under 35 U.S.C. § 251, separately under 35 U.S.C. § 112(b), and separately under 35 U.S.C. § 112(a).
The prior art that is cited but not applied in the rejection is considered to be relevant to the disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Darlington Ly whose telephone number is 571-272-2617. The examiner can normally be reached on Monday-Friday between 9AM-5PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dana K. Weiland can be reached on (571) 570-0253. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARLINGTON LY/
Primary Examiner, Art Unit 2914
1 In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).